Copyright infringement has two prongs — access & copying — both of which are apparent here. Copyright owners have the exclusive right to reproduce, transfer, and perform or display (whichever applies) their original works, along with the right to create derivative works based on the original. Without anything more than knowledge of the general allegation, it seems like Warner Bros. saw Tyson’s tattoo (he’s in the movie), reproduced and displayed it on Ed Helms‘ face without authorization from the copyright owner, Whitmill . . .

So, Whitmill could win. (How Tyson could commission a tattoo and not get a work for hire agreement is beyond me, but then again, he’s not an IP attorney.) Too bad for Whitmill his work was not registered in a timely fashion (within 3 months of publication), so he is precluded from seeking statutory damages or attorneys’ fees.

And then there’s the fair use defense. To determine whether an unauthorized use of a copyrighted work is “fair use,” we examine 4 factors:

(1) The purpose & character of infringing use; is the use commercial, or non-profit & educational.

(2) The nature of infringed work (subject matter, type of work, market for the work).

(3) The percent of work taken (compared to the whole work).

(4) The effect of infringing use on the market for the original (would purchasers choose the infringing work instead of the original).

Warner Bros. use of the tattoo certainly is commercial, so one might say this factor favors Whitmill. The work is a tattoo, the market for which consists of tattooed people, I suppose. This factor doesn’t favor either side, though it may play to Warner Bros. favor since I imagine there’s no law in this area and it’s going to cost a Warner Bros. sized fortune to create it. The entire work (tattoo) was used without permission, which favors Whitmill. The effect of the infringing use on the original might be quite positive, actually, which favors Warner Bros. I mean, who do you think gets more “impressions,” Mike Tyson or Ed Helms, especially in a movie with “Hangover” in its title (the first one was hilarious). So of four factors, two favor Whitmill, one favors Warner Bros. and one is a wash. Seems like Whitmill wins, except that the work is a parody, and parody is a well-established affirmative defense to copyright infringement. Plus there’s the issue of whether the work is protectable under copyright law in the first place, which I presume it is from Whitmill’s copyright registration.

So, what do the Parties say?

Well, Whitmill claims his tattoo “may be the most distinctive tattoo in the nation.” He also claims that Mike Tyson agreed that Whitmill owned the copyright in the tattoo, as evidenced by a tattoo release form signed by Mike Tyson. He claims he has been damaged by the movie promotion already and seeks to enjoin release of the film in order to prevent additional damages. Warner Bros. Answer denies it committed copyright infringement and claims that Mr. Tyson was licensed and authorized to copy, distribute or publicly disseminate his tattoo. It also alleges the following 16 Additional Defenses:

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1. Mr. Tyson’s tattoo is not copyrightable because it is not sufficiently original or creative.

2. Plaintiff does not own any protectable rights in Mr. Tyson’s tattoo because tattoos on the skin are not copyrightable.

3. Plaintiff does not own any rights in Mr. Tyson’s tattoo because Mr. Tyson, not plaintiff, is the owner of the tattoo.

4. Plaintiff does not own any exclusive rights in Mr. Tyson’s tattoo because Mr. Tyson is a co-owner of the tattoo.

5. Plaintiff lacks standing to sue as he is not the owner of a copyright in Mr. Tyson’s tattoo.

6. Mr. Tyson’s tattoo is an unauthorized derivative work not entitled to copyright protection under Section 103 of the Copyright Act.

7. Warner Bros.’ use of Mr. Tyson’s tattoo in THE HANGOVER and THE HANGOVER: PART II was authorized by Mr. Tyson pursuant to Mr. Tyson’s implied license from plaintiff.

8. Plaintiff is estopped from asserting a claim for copyright infringement against Warner Bros. based on Warner Bros.’ use of Mr. Tyson’s tattoo in THE HANGOVER: PART II because he failed to take any action with respect to the use of Mr. Tyson’s tattoo in THE HANGOVER.

9. Plaintiff’s claim is barred by laches because he failed to take any action with respect to the use of Mr. Tyson’s tattoo in THE HANGOVER.

15. The release attached to the Verified Complaint as Exhibit 3 is void as against public policy.

16. The release attached to the Verified Complaint as Exhibit 3 is unconscionable and therefore unenforceable.

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Before Warner Bros. filed its Answer, Whitmill filed a Preliminary Injunction motion asking the court to enjoin release of the film. In its Response to Whitmill’s motion, Warner Bros. claims the tattoo is not subject to copyright protection (supported by a Declaration by (perhaps the world’s leading) copyright expert David Nimmer). Warner also cites Tyson’s pending trademark registration application for the drawing of his tattoo as evidence of his ownership of rights to the image.

Much will depend on the ruling on the preliminary injunction motion, the hearing on which occurred today at 1:30 pm. Just because a claim seems crazy doesn’t mean that it is. New law gets made by cases like these. I suspect like most cases, this too will settle immediately after the preliminary injunction order, which is in part determined by likelihood of success on the merits. If not, this certainly will be a fun one to watch. It also is likely to have significant ramifications in the field of tattoo artistry as many tattoo artists, most notably Ed Hardy, showcase their work in a variety of different forums.

The law is full of grey areas, which is what makes being an attorney so challenging and interesting. There’s rarely a “right” answer and there’s always at least two sides to every dispute. A good counselor ensures that their client understand the risks and helps them evaluate them appropriately for their level of tolerance.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program.
Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers.
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And while I think Warner will end up burying this one, its a very fine line to flirt with and amazing that no one at the studio did a preemptive strike to protect themselves.

Ironically I’m dealing with WB Studios right now; incorporating The Green Lantern movie into some MTV Movie Awards activations. They’re incredibly nit-picky when it comes to their property – that’s for sure. (Lots of long discussions about the color green.)